The following is an article, concerning Lavely & Singer's filing of the
first ever suit under the federal Anti-Cybersquatting Consumer Protection
Act, from The National Law Journal article "Cyberpirates Now May
Have to Walk the Plank":

Suits begin under new law that outlaws
registering others' marks and names for profit

A noose is tightening around the necks of the cyberpirates
who collect big bucks by registering, then selling, the domain names of
well-known businesses and individuals.

President Clinton signed the Anticybersquatting Consumer
Protection Act on Nov. 29 as part of an omnibus appropriations bill. A
flurry of lawsuits invoking the new law's provisions was quick to follow,
including a suit, filed three days after the act was signed, by actor
Brad Pitt against two domain-name holders.

Attorneys say that the new law, together with dispute-resolution
procedures adopted in August by the International Corporation for Assigned
Names and Numbers (ICANN), makes it increasingly risky to engage in the
casual Internet profiteering off the name and goodwill of others.

"The anti-cybersquatting statute... strengthens [our]
position quite a bit," said Mr. Pitt's lawyer, Jay Lavely, of Los Angeles'
Lavely & Singer. It deals with the express situation his client is in,
he said.

The new law adds a section to the Trademark Act of 1946
(the Lanham Act). The new act prohibits the bad-faith registration or
use of an Internet domain name that infringes on a trademark or famous
mark. It also protects people with famous names, although the extent of
that protection is less clear, lawyers say, because the statute orders
the Department of Commerce to study the issue.

"The [new] law is very helpful because trademark law doesn't
necessarily fit very well with protecting domain-name registration," said
Barbara Shufro, an IP lawyer in Pillsbury Madison & Sutro L.L.P.'s Palo
Alto, Calif., office.

Trademark law protects marks connected with the distribution
of goods and services, but cybersquatters often allow a domain name to
go unused, and therefore may not be infringers, she said. By prohibiting
cybersquatting itself, the act "will make it easier for trademark owners
to get ownership of the domain names that correspond with their trademark,"
she said.

"There are people saying this bill gives an unfair advantage
to trademark holders," said Ron N. Dreben, an intellectual property and
technology partner in the Washington, D.C., office of Morgan, Lewis &
Bockius L.L.P. "I don't see it that way," he said. "I see it as clarifying
that people who take domain names of other people's markers with no bona
fide purpose or intentions have infringed. That's now very, very clear
and always should have been clear."

The statute adds teeth to common-law remedies by offering
the option of seeking statutory damages of between $1,000 and $300,000
in lieu of proving damages. "There's a certain downside monetary risk
to cyberpirates even if trademark holders can't show actual harm," Mr.
Dreben said.

That's an important deterrent, said Harry Rubin, head
of the Internet practice group at Washington, D.C.'s Shaw Pittman, because
"most of these outfits that have been kidnapping domain names are Mom-and-Pop
shops or kids sitting in the basement."

The act also allows parties to bring in rem actions against
the offending sites themselves in cases in which domain-name owners cannot
be located--something that courts have been unwilling to allow in the
past, Mr. Dreben said.

FIRST SUIT
Brad Pitt's suit appears to be one of the first invoking the new law.
Filed in federal court in the Central District of California on Dec. 2,
the complaint seeks redress from the owners of bradpitt.com, Khalid Alzarooni
and Nidal Abu-Robb, who have tried to sell the domain name to Mr. Pitt
for as much as $50,000, Mr. Lavely said.

Also named in the suit is KMA Visual Design OY, a Finnish
company that owns bradpitt.net, a commercial site and fan club outlet
that sells merchandise featuring the actor.

Trademark holders have criticized the new law for requiring
them to show bad faith in order to go after cybersquatters. But Mr. Lavely
said that he thinks the requirement is met if people are profiting off
someone else's name: "I believe that constitutes evidence of bad faith."

Mr. Pitt's suit is now one of a crowd of early birds.
Others, filed within weeks of the new anti-cybersquatting measure, include
actions brought by Harvard University, the National Football League and
Quokka Sports Inc.--the operator of the official America's Cup Web site--acting
on behalf of America's Cup organizers.

"It's likely that there will be other clients, other people
who will want to assert rights of this claim," Mr. Lavely predicted. "These
represent valuable rights," he added, referring to the online turf war.

The new law also gives lawyers ammunition before they
get into court, said Keith Kupferschmid, intellectual property counsel
for the Software & Information Industry Association. Companies and individuals
sending cease-and-desist letters to cybersquatters requesting that they
voluntarily give up domain names now have a law to cite.

And the law is a welcome addition to the dispute-resolution
procedures adopted by ICANN, Mr. Dreben said. "If a party is seeking monetary,
injunctive relief beyond [a domain-name] cancellation or transfer, they
have to go to court," he said. "Then, this new legislation will be helpful."